EnergySquare.com : Complainant gets slapped with a finding of Reverse #Domain Name Hijacking

The UDRP filed against the domain name EnergySquare.com had a sad outcome for the Complainant: Guilty of engaging in Reverse Domain Name Hijacking (RDNH.)

What happened?

According to the WIPO panelist, the Complainant’s only ground for bad faith was that the Respondent is a “domainer” who owns almost 1,000 domain names and that the disputed domain name is not being used but is listed for sale.

The Complainant, Energysquare, France, failed to disclose they formed in 2015 all while pointing the finger at the domainer Respondent, who registered EnergySquare.com in 2006.

Final decision: deny transfer of the domain and a finding of RDNH for the Complainant.

Energysquare v. Management Team, Easy Property
Case No. D2021-1219
1. The Parties

The Complainant is Energysquare, France, represented by Walter Billet Avocats, France.

The Respondent is Management Team, Easy Property, Republic of Korea, internally represented.
2. The Domain Name and Registrar

The disputed domain name <energysquare.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2021. On April 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 21, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 20, 2021. The Response was filed with the Center on May 18, 2021.

The Center appointed John Swinson as the sole panelist in this matter on June 1, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background

The Complainant is a French entity. Little information is provided about the Complainant in the Complaint. From Internet searches conducted by the Panel, the Complainant appears to be involved in respect of a consumer electronic device to charge iPhones that is in the shape of a square.

The Complainant owns the following trademark registrations:

– French semi-figurative trademark ENERGYSQUARE No. 4232466, filed in Classes 9 and 42, on December 9, 2015;
– French semi-figurative trademark ENERGYSQUARE No. 4446441, filed in classes 9 and 42, on April 16, 2018;
– International semi-figurative trademark ENERGYSQUARE No. 1440088, filed in classes 9 and 42, on October 9, 2018; and
– European Union word Trade Mark ENERGYSQUARE No. 18208232, filed in classes 9 and 42, on March 10, 2020.

The Respondent is a Korean entity. The Respondent’s business appears to be related to brand creation and protection. The Respondent helps businesses create company names and brand names and to secure trademark protection and domain names, as an integrated service. The Response states that this business has been in operation since 2016. The Respondent is also a real estate business that (according to the Response) has been in operation since 1995.

As set out in the Compliant, the WhoIs records show that the disputed domain name was created on June 3, 2006. The Respondent states that disputed domain name was registered by the Respondent at least as early as February 6, 2013.

The disputed domain name redirects to a website at “www.iphome.com”.
5. Parties’ Contentions
A. Complainant

The Complainant makes the following submissions:

Identical or Confusingly Similar

The Complainant is the owner of the four ENERGYSQUARE trademarks listed in section 4 above.

The disputed domain name is identical to the Complainant’s trademarks since it is a reproduction of the latter.

Rights or Legitimate Interests

The Respondent does not operate a website at the disputed domain name, since it redirects to the website available at the URL “www.iphome.com”. This website is operated under the name of IP Home & Partners, and never refers to the name “Energysquare”.

The Respondent is therefore (i) not using the disputed domain name in connection with a bona fide offer of goods or services, and (ii) is not known under the disputed domain name.

The website operated by the Respondent, to which the disputed domain name redirects, indicates that the Respondent’s business is to assist businesses in acquiring domain names. The Respondent has therefore acquired the disputed domain name to offer it to its clients for profit.

In view of the foregoing, it appears that the Respondent has no rights in the disputed domain name, nor any legitimate interests in it.

Registered and Used in Bad Faith

The website to which the disputed domain name redirects indicates that the Respondent assists people who wish to acquire domain names. The contact form available on this website states that the Respondent is unable to respond to all requests for domain names due to the large number of requests.

The “contact us” section of this website states:

“For domain name buyers, include your domain name, phone number with country code, and purchase price in the message line. If it’s serious, it should be considered seriously.”

The Respondent owns almost 1,000 domain names, without any consistency and/or direct link with any specific activity. Most (if not all) of such domain names refer to the same webpage, offering said websites for sale.

The disputed domain name has not been used for since its creation, and it has been advertised for sale once the Complainant registered its first trademark.

The Respondent is a domainer who invests in domain names in order to resell them for a price that exceeds the amount of the costs he had pay to acquire the domain names.
B. Respondent

The Respondent makes the following submissions:

Identical or Confusingly Similar

The term “energy square” consists of descriptive words, and is similar to Times Square, Food Square and Books Square where the word “square” has the dictionary meaning of “an open area surrounded by buildings in a town…”.

There are other uses of “Energy Square” such as Energy Square in Dallas, Energy Square Rupco and Energy Square Dental.

The Complainant’s trademark registrations are not for word marks, but include a design comprising a diamond shaped floppy disk with a plug attached.

The Respondent owns a number of other domain names that include the word “energy”.

Rights or Legitimate Interests

The disputed domain name consists of a descriptive generic term so the Respondent could have legitimate interests in it.

The Respondent did not acquire the disputed domain name to offer it to its clients for a profit.

Registered and Used in Bad Faith

The registration of the disputed domain name pre-dates the Complainant’s trademark rights. The Complainant is attempting to veil this fact and to lead the Panel to make a wrong decision.

The Complainant has run a real estate business since October 1, 1995 and has operated IP Home (at “www.iphome.com”) since 2016. IP Home helps businesses create company names and brand names, and to secure trademark rights and domain names to match the brand, as an integrated service. Selling domain names is not a core business of IP Home.

The domain names owned by the Respondent consist of almost all generic words.

None of the limbs of paragraph 4(b) of the Policy apply here.

The Complainant is attempting intentionally to lead the Panel to make a wrong decision. This is an abuse of the Policy and an attempt at Reverse Domain Name Hijacking.
6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The onus of proving these elements is on the Complainant.

Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar

The Complainant has proven ownership of registered trademarks for ENERGYSQUARE (all in lowercase), including a European Union word mark.

The disputed domain name is identical to the Complainant’s registered ENERGYSQUARE trademark, disregarding the Top-Level Domain “.com”.

The Complainant succeeds on the first element of the Policy in relation to the disputed domain name.
B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides four circumstances in which the Respondent has rights or legitimate interests in a disputed domain name. These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The Complainant’s case under this element of the Policy appears to be based mainly upon the Respondent having registered the disputed domain name as part of a large portfolio of domain names and that the Respondent has not used the disputed domain name for a particular business activity and is not commonly known by the disputed domain name. However, there is nothing wrong per se in a domain name investor registering domain names and holding them provided that the circumstances do not indicate illegitimate conduct or bad faith. Noting the analysis under the third element, the Panel finds that the Respondent’s conduct is not in bad faith.

In view of the findings below in relation to bad faith, the Panel does not need to decide this element.
C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain name in bad faith.

The disputed domain name was registered at least 2 years prior (and possibly longer) to the Complainant obtaining its trademark rights.

The Complaint provides little detail about the Complainant. According to evidence provided by the Respondent, the Complainant seemed to have been founded in 2015 (and the Panel has corroborated this information with other online publicly available sources).1

Thus, the Complainant was founded after the Respondent registered the disputed domain name.

Accordingly, the Respondent could not have registered the disputed domain name with the Complainant or the Complainant’s trademark rights in mind.

The Complainant has provided no evidence to show that the Respondent was, or should have been, aware of the Complainant or its trademarks even at the time the Complaint was filed, and certainly not at the time the Respondent registered the disputed domain name which was before the Complainant existed. There is also no evidence that when the Respondent registered the disputed domain name was seeking to capitalize unfairly any nascent rights of the Complainant (particularly noting that the Complainant was not founded yet). The Panel notes the Complainant’s claim that the disputed domain name has been advertised for sale once the Complainant registered its first trademark. The fact that the disputed domain name may have been available for sale through the Respondent’s website does not affect the conclusion that the Complainant has not proven the lack of registration in bad faith. In addition, the Panel does not have enough evidence to conclude that such offer for sale would have been intended for the Complainant (or for a competitor of the Complainant). It seems from the evidence on the file that the disputed domain name may have been advertised for sale once the Respondent launched its services at “www.iphome.com” in 2016, but that would not be sufficient to conclude that the Respondent was targeting the Complainant or to consider, in the circumstances of this case, the Respondent’s conduct to be in bad faith.

Given this, there is no basis on which the Panel is willing to find that the disputed domain name was registered in bad faith. This alone would prevent a finding in favor of the Complainant. See Insight Energy Ventures LLC v. Alois Muehlberger, L.M.Berger Co.Ltd., WIPO Case No. D2016-2010.

There is also no evidence that the Respondent is using the disputed domain name in bad faith.

The Complainant fails on the third element of the Policy in relation to the disputed domain name.
7. Reverse Domain Name Hijacking

The Respondent states that the Complainant is engaging in reverse domain name hijacking (RDNH).

Paragraph 15(e) of the Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”.

RDNH is furthermore defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Panels have also referred to paragraphs 3(b)(xiii) and (xiv) of the Rules in addressing possible RDNH scenarios.

Prior panels have found RDNH where the complainant had clear knowledge of a lack of respondent bad faith such as registration of the disputed domain name well before the complainant acquired trademark rights.

The Complaint included information showing that the disputed domain name was first registered in 2006. The Complaint was silent on when the Complainant was founded, and provided no explanation as to how in these circumstances the Respondent could have registered the disputed domain name with the Complainant in mind. The Complainant was represented by legal counsel. See Chuan Sin Sdn. Bhd. v. Internet Admin (not for sale), Reflex Publishing Inc., WIPO Case No. D2014-0557; and HBA Holding LLC v. William Sylvester, WIPO Case No. D2021-0048.

The Complainant’s only ground for bad faith was that the Respondent is a “domainer” who owns almost 1,000 domain names and that the disputed domain name is not being used but is listed for sale. The Complaint appears to rely on paragraphs 4(b)(i) and (ii) of the Policy but does not explicitly cite those provisions.

Under paragraph 4(b)(i) of the Policy, it would be evidence of registration and use in bad faith if there are circumstances indicating that the Respondent registered the disputed domain name primarily for the purpose of selling it to the Complainant or a competitor of the Complainant for a large profit. As the Complainant did not exist when the Respondent registered the disputed domain name, this could not have been the Respondent’s primary intention at the time the Respondent registered the disputed domain name. Further, while passive holding can, in some circumstances, support a finding of bad faith (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003) there is no basis for such an assertion here, noting that by the time the Respondent was the registrant of the disputed domain name the Complainant was not even founded. There is no evidence either that the Respondent has used the disputed domain name in bad faith.

Finally, the Complainant indirectly implies that the Respondent has engaged in a pattern of conduct of registering domain names for the purpose of reselling, as the Respondent owns many domain names, which are for sale. However, simply owning a number of domain names is not of itself evidence of bad faith. In order for the Panel to find that the Respondent has engaged in a pattern of conduct for the purpose of paragraph 4(b)(ii) of the Policy, the domain names which the Respondent has registered would need to reflect third party trademarks, and an abusive conduct based on to the similarity of such domain names with the third party trademarks. Here, there is no such evidence, nor that the domain names were registered by the Respondent to prevent existing third party trademark owners from the registration of the corresponding domain names. Insight Energy Ventures LLC v. Alois Muehlberger, L.M.Berger Co.Ltd., WIPO Case No. D2016-2010. The Complainant’s case on bad faith registration and use had no chance of success. The Complaint should never have been filed.

In these circumstances, the panel finds the Complainant guilty of RDNH.
8. Decision

For the foregoing reasons, the Complaint is denied.

John Swinson
Sole Panelist
Date: June 15, 2021

1 Some sources refer to a foundation in 2015, e.g. “www.partechpartners.com/companies/energysquare/”, and others refer to 2014, for example “www.crunchbase.com/organization/energysquare”, or to a technology developed in 2014 but launched in 2015, see www.iamnewgeneration.co.uk/editorial-desk-editorial-spotlight-timothee-le-quesnes-energysquare-invention/. In any case, the Panel notes any of these dates would be after a date at which the Respondent was the registrant of the disputed domain name.

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